Joint Infringement Case Moves Toward Supreme Court Review

By Dennis Crouch

Limelight Networks, Inc. v. Akamai Technologies, Inc., Docket Nos. 12-786 and 12-960 (Supreme Court 2013)

Limelight and Akamai have proposed dueling questions to the Supreme Court. Limelight, the accused infringer, asks: “Whether the Federal Circuit erred in holding that a defendant may be held liable for inducing patent infringement under 35 U.S.C. § 271(b) even though no one has committed direct infringement under § 271(a).” The patentees Akamai and MIT ask: “Whether a party may be liable for infringement under either section of the patent infringement statute, 35 U.S.C. §271(a) or § 271(b), where two or more entities join together to perform all of the steps of a process claim.” These questions involving the fundamental definitions of patent infringement have been stewing for a number of years, and this case stems directly from the Federal Circuit’s fractured en banc decision in 2012.

The Supreme Court today has indicated some interest in the case by calling for the views of the US Solicitor General. The Supreme Court may see the case as an extension of its decision in Global-Tech Appliances, Inc. v. SEB, S.A, 2011 U.S. LEXIS 4022 (U.S. May 31, 2011). That case focused on the intent requirements infringement-by-inducement.

= = = = =

The asserted claim from U.S. Patent No. 6,108,703 is below:

19. A content delivery service, comprising:

replicating a set of page objects across a wide area network of content servers managed by a domain other than a content provider domain;

for a given page normally served from the content provider domain, tagging the embedded objects of the page so that requests for the page objects resolve to the domain instead of the content provider domain;

responsive to a request for the given page received at the content provider domain, serving the given page from the content provider domain; and

serving at least one embedded object of the given page from a given content server in the domain instead of from the content provider domain.

Apparently in practice, the “tagging” step is performed by Limelight’s customers and limelight therefore argues that there cannot be infringement because no single entity practices each and every step of the claimed invention.

Thus, the basic setup is that Limelight performs all-but-one of the elements of the claimed invention and then encourages its customers to perform the missing stem. Limelight wins this case with a holding of non-infringement under the BMC/MuniAuction line of cases because infringement under 271(a) requires a single entity that causes performance of each and every element of the claimed invention and since Limelight did not cause its customers to perform the missing step. Likewise, under those cases inducement under 271(b) fails because the cause-of-action requires proof of underlying direct (271(a)) infringement. On the other hand Akamai argues that the BMC/MuniAuction rules are too restrictive. Rather, Akamai argues that the single-entity requirement of 271(a) direct infringement is too narrow and that inducement under 271(b) should not require underlying direct infringement. For its part, the Federal Circuit took a somewhat middle-ground and only held that inducement does not require underlying direct infringement so long as a single entity induced all of claimed elements.

67 thoughts on “Joint Infringement Case Moves Toward Supreme Court Review

  1. 67

    I put holding in quotes to point out it was not a holding.  It was an assumption the court made about the scope of the patent in order to decide the case.

    Sent from Windows Mail

  2. 66

    While there was some discussion of the scope of the patents, the SC in Univis Lens decided the case upon the following “assumptions:”

    “As appellees concede, the invention of only a single lens patent is utilized in making each blank and finishing it as a lens. … And we assume for present purposes, without deciding, that the patent is not fully practiced until the finishing licensee has ground and polished the blank so that it will serve its purpose as a lens….

    “…[E]ach blank, as appellees insist, embodies essential features of the patented device and is without utility until it is ground and polished as the finished lens of the patent. …[The] sale of the blanks by an unlicensed manufacturer to an unlicensed finisher for their completion would constitute contributory infringement by the seller.”

  3. 65

    As noted in Akamai, if the patent covers a product, a person performing the last step that makes the product infringes the product patent by making it under §271(a).

    In the case of a method that produces a product, the product is covered by the patent under §271(g).

    How can you make the distinction between direct infringement under 271(a) when one makes a product by performing a last step, an infringement under 271(g) when the claim is to a method that makes a product?

    Furthermore, under Zoltek, one who imports a partially completed product produced by the patent method directly infringes the method patent under §271(g). Implicitly, the person who finishes the product by performing the last step also infringes, directly, under §271(g). I would also think that they should infringe under §271(a).

  4. 62

     anon, you are most decidedly the most obtuse person I have ever had a discussions with.  It is almost as if you cannot read.  What you just said is so wrong as to be beyond explanation.

  5. 61

    Query: Does a person who performs only the last step of a method claim infringe the method claim?Yes.  There seems to be no other way to read the en banc case of Zoltek when construing §271(g). However, Akamai, a later en banc case analyzing §271(a) seem to come to a different conclusion. However, at least in the case of a product which is produced by a patented process, the Supreme Court has already determined that the ultimate finisher, the person who performs the last step, directly infringes the patent, while the people who perform the steps on the partially completed product contributorily infringe. It seems though that the Federal Circuit in Zoltek seem to hold that the importer of a partially completed product for completion directly infringed, but under §271(g).  


  6. 60

    My dear brother McCracken, your vehemence betrays your very preaching.

    Thou protests much too much.

    I’ve told you that Malcolm has some control over how bad he looks – he just can not CRP all over the place. You need to aim at the right target (regardless of your philosophical bent).

  7. 59

    Wow – you really don’t get it that it is you that is the hypocrite, do you?

    And what the H does Quinn have to do with any of this – at all?

    Or is this just an opportunity for you to show just how much of a pr1ck you are for attacking Quinn out of the blue?

    Maybe you can attack some first time posting cancer survivor, some grieving son, or even a dead president…?

  8. 58

    Ned: The person who does even routine last steps is the direct infringer. That was the “holding,” in part of Univis Lens.

    When the process is complete, the person who did the last step has the benefit of the process, the entire process. He is a direct infringer and liable.

    Wrong. Whatever the particular facts of Univis Lens are, this is not the holding. A person who performs the last step of a patented method is not a direct infringer of the method. That’s just wrong, Ned. Try again. Please build in the necessary caveats and make an accurate statement.

  9. 57

    takes for himself the entire value of the invention.

    This is most definitely NOT in accord with Univis Lens, as in that case the item was exhausted prior to that last step.

  10. 56

    Does a person who performs only the last step of a method claim infringe the method claim.

  11. 55

    LOL – who else uses words like greedy opportunists and bottom-feeder…?

    The word for Malcolm (still): Hypocrite

  12. 54

    O’Malley’s concurrence/dissent is intersting. I’d like to see a bit more of this sentiment from the other judges:

    I do not purport to prejudge Cisco’s arguments (re claim construction and no direct infringement); Cisco may be wrong on both points. I urge us, however, to judge them one way or another. We do no one any favors by kicking these potentially dispositive cans down the road and may well be requiring undue expense and was tying scarce judicial resources in the process. I believe our appellate function requires that we avoid such inefficiency whenever possible.


  13. 53

    For instance, during the cross-examination of Jonathan David, a coowner of Commil who is Jewish, Cisco’s counsel attempted to perpetuate the stereotype of Jewish people as greedy opportunists by asking Mr. David if his cousin was a “bottom-feeder who swim[s] around on the bottom buying people’s houses that they got kicked out of for next to nothing.” Later, when Mr. David mentioned dining at a local barbeque restaurant, Cisco’s counsel quipped, “I bet not pork.”

    Just lovely. This awesomeness courtesy of Cisco’s trial counsel.

  14. 52

    Thanks, LB. Great holding here:

    The majority: We see no principled distinction between a good-faith belief of invalidity and a good-faith belief of non-infringement for the purpose of whether a defendant possessed the specific intent to induce infringement of a patent.

    plus this amusing footnote:

    In dissent, Judge Newman does little more than
    construct a straw man and set him ablaze. We certainly
    do not hold “that if the inducer of infringement believes in good faith that the patent is invalid, there can be no liability for induced infringement.”

    I wonder, in the case where a good faith belief in invalidity exists in fact, what other evidence would weigh for or against a finding of inducement? Once has done their due diligence and arrived at their good faith belief in the invalidity of a patent, what further acts would (might?) ensure that the scales tip toward a finding of no liability for inducement?

  15. 51

    That was the “holding,” in part of Univis Lens.

    Don’t think so Ned – weren’t you the one that tried to make sure that “holding” was a term beign properly applied in discussions here?

    In fact, you supplied a reference on that point (a reference I then used to debunk your anti-business method Bilski crusade).

  16. 50

    Coupla follow ups. As for “the local counsel are always trying to “out-J(e)s(u)s” one another”, we have the plaintiff’s lawyer delivering these gems:

    “…during the voir dire, Commil’s counsel explained that the case began in Israel, “the Holy Land for many religions.” “


    “…during closing argument, Commil’s counsel argued …Cisco wanted the jurors to “split the baby”, “You know, that wasn’t wise at the time of King Solomon. It’s not wise today.”

    As for my comment about Everingham, looks like I’m way behind the times and he’s returned to private practice, so nevermind….

  17. 49

    Les, you have to be joking, right? That person receives the full benefit and infringes, regardless that the other step are performed by the generic manufacturer, under 271(g) by using the drug.

  18. 48

    Oh, I LOVE this quote. As soon as I read it, I thought “that sounds like Everingham”. This guy deserves a real appointment (right now he’s a magistrate). Very sharp (his instruction to the jury after a lawyer’s blatant ethnic stereotyping of a witness):

    “Sometimes when a lawyer injects irrelevant information into a case it’s because he perceives a weakness in the merits of his case. I don’t know whether that’s why it happened in this case, but you can consider that as you’re evaluating the testimony and the evidence in this case.”

  19. 47

    (Try, try again. I think “Je(e)s(u)s” may be the culprit. Which is kinda funny…)

    I’m guessing Israeli national or Jew(i)sh inventors…

    I don’t know anything about this trial or the lawyers involved, but I’ve seen a few at EDTX and read a few more transcripts.

    It seems to me that the local counsel are always trying to “out-Je(e)s(u)s” one another in front of the jury pool.

    Our main counsel (large firm guys from DC, NY) would just shake their heads and try to curb that behavior but to no avail. And it did seem to go over with the jury. One local guy complained that if he didn’t do it, the other side’s local guy would get an unfair advantage with the jury…


  20. 45

    That can’t be right in all cases.

    If the claim has 47 “steps” directed to making dose of drug and which are carried out by a generic drug manufacturer, with the 48th step being: take the dose of the drug, thereby curing the boogy woogy flu, it clearly should not be that the poor inflicted patient is a direct infringer.

  21. 44

    Regarding the trial shenanigans, read the below excerpt from the defendant’s closing argument. Now, see if you can guess what nationality/ethnicity applies to the plaintiffs…

    Ladies and Gentlemen of the Jury, you are, in this case, truth-seekers. You are charged with the
    most important job in this courtroom, and that’s determining the truth. . . . And when you figure out what the truth is, you’ll know how to answer that verdict form. You remember the most important trial in history, which we all read about as kids, in the Bible had that very question from the judge. What is truth?

  22. 43

    An important new case out today reaffirms the GlobalTech rule on inducement of infringement (must be knowing or willful blindness, not recklessness or negligence), plus it creates a new rule: a good-faith belief in invalidity is relevant evidence weighing against the knowledge element. Newman writes a vigorous dissent, but I think she’s missed the point on this one, at least slightly.

    There’s also a fascinating section on the trial shenanigans employed in front of the Texas jury. I would say “unbelievable,” except that it’s all too believable.

    link to

  23. 42

    So what? The person who does even routine last steps is the direct infringer. That was the “holding,” in part of Univis Lens.

    When the process is complete, the person who did the last step has the benefit of the process, the entire process. He is a direct infringer and liable.

    His contributors can be sued for contributory infringement. But he should have a right to implead them for contribution as any joint tortfeaser can under state law.

  24. 41

    1. There is no significance to the order in which the “steps” in a claim are recited.

    2. What if the “last step” is nothing more than insignificant post solution activity?

  25. 40

    Les, Rader was and is wrong.

    All steps have to be performed, yes.

    The person who does the last step is the direct infringer.

    Others are contributory.

  26. 39

    Also consider that the person who does the last step on a partially completed product made according to the other steps takes for himself the entire value of the invention.

  27. 38

    I do not agree.  All one has to show is that all elements were practiced.  The person who does the last step makes the product produced by the process and infringes under 271(a).  He infringes under 102(g) if he use or sells.  If the last step is only a use, he directly infringes under 271(g).


  28. 37

    Looks to me like they wrote a claim, they got a claim, and now they’re not happy with what the claim says.

    Cry me a river over your poorly writ claim.

    Sorry; next time write yourself a better claim.

  29. 35

    Ned, I think Rader said that multiple actors can directly infringe if they are in a vicarious liability or equivalent relationship, so that the actions of one can be imputed to the other. I don’t think that changed. So if you want to go after joint infringers under a strict liability (direct) infringement theory, you still need a showing of direction-or-control.
    If you cannot show that, then you can try and establish that one joint infringer induced the other. Inducement is not a strict liability theory, so in this case you have to make a strong showing of culpability. Either standard is tough and not easily met.
    But applying both standards serially in the same case, now that would be almost impossible to meet. Picture a “mastermind” who induces multiple independent actors to perform different steps of a patented method. Prior to Akamai, you had to show a vicarious liability relationship between all the multiple actors, and THEN you had to show that the mastermind knew of the patent, intended it to be infringed by the downstream actors, etc. – in combination, this would set the bar so high as to be unreasonable.

  30. 32

    Hey Candi, I have long told Malcolm that he has control.

    All he needs to do is stop posting his CRP. He does that and I won’t rub his nose in it.

  31. 31

    I have plenty of clues.

    It is you that seems a bit clueless, my fellow child of God.

    You see a hateful rant from me where I am fully justified, but you close your eyes to the source of true unbridled and unprovoked hatred from Malcolm.

    It is he whom you should be addressing. It is he that works in a world of law he despises. It is his soul that is in danger and needs your Pollyanna message.

    Me? I am fine. You are confusing your dislike for my message with what you think should be THE message. More than a little bit of pride and arrogance coming from you, my fellow child.

    Come now, McCracken, live what you preach.

  32. 30

    That’s just shocking to hear that from one of God’s children.

    Are you still being vengeful from when I busted your chops about relevancy?

    Or is it the other ‘god’ you serve, seeing as you appear to be aligning with the board’s greatest deceiver…

    Come now, McCracken, live what you preach.

  33. 29

    You are aiming at the wrong target McCracken.

    I just had the best week ever. Haven’t you been paying attention?

  34. 28

    Sure I did

    Well, that part is right – but then again, you really don’t have the option of denying that, do you?

  35. 26

    If you are going to use the reference as a rhetorical tool, use it right.

    Geesh, this from the proclaimed ‘master’ of English as a first language.

  36. 25

    I have made copies

    Be sure to put them in a safe place. Jane Fonda might try to steal them.

  37. 24

    Nice attempt at spin.

    Failed attempt.

    But hey, not everyone can have such a keen ‘mastery’ of English as a first language and still FAIL at their first substantive attempt at squaring the Prometheus case with the precedent case most on point, toasting their pet ‘theory’ in the process, and then being speechless as how to defend that torched theory like you, Malcolm.

    And that’s a good thing.

    Any time you feel like stopping the groveling of your nose in your own CRP, just let me know.

  38. 23

    There you go again Malcolm (with a tilt of the head), doing that ‘projecting’ thing again.

  39. 22

    LOL – I have made copies in case they are ‘wiped,’ Malcolm,

    and please, such a thinly disguised begging for help from Prof. Crouch won’t change the facts (and you cannot spin your way out of what you spun your way into).

    But maybe you can try another 20,000 words on something you ‘don’t care about.’ Please, I am enjoying your futile efforts.

    LOL – what a nutless wonder.

  40. 20

    Or maybe just full of your usual insults

    translation: “Or maybe just full of your usual well placed and perfectly insightful insults which I, Malcolm have fully earned.


    Not sure why you find my listing of your duplicitous svckpuppet names to be a strange comment. You point-blank 1ied at PatentDocs, but you KNOW that Prof. Crouch said that 1ying is not permissible here.

    Are you saying that those ‘pen names’ are not yours?

    LOL – really? Seeing as NO ONE else has ever posted the exact same banal ‘theories’ and made the exact same simple mistakes of patent law, the 1ie is transparent, were you to make it here (as well).

    LOL – and maybe you never did admit to knowing what the controlling law is in regards to the exceptions to the printed matter doctrine, that “configured to” is structural, or that you just most recently toasted your precious ‘theory’ trying to square the Prometheus case with the precedent case most on point…

    /switch to this reality here on planet Earth

  41. 19

    Rubbing your nose in your own CRP

    Okay, so you tried to set your puppy on fire when you were five and your daddy took it away. I guess I can see how that could affect a person, especially someone who’s already struggling with the second language and everything. Talk to your doctor about it at your next session.

  42. 18

    LOL – you keep on doing that ‘projecting’ thing Malcolm.

    It gets a bit stale.

    Just like machines really don’t think, the Archives do not dream – what I say is exactly what is there. No amount of your attempted spin will change that.

  43. 17

    Here is another example where §271(g) pertains. The product of a patented process is covered to the extent that importers, and those who use or sell that product in the United States, infringe. Thus a person who performs the last step and produces a product will infringe under §271(g) if they use or sell the product. Naturally one assumes that he would also directly infringe by performing that last step, all the other steps having been performed on the partially completed product prior to the performance of that last step. That infringement is or at least should be under §271(a).

    Univis Lens, a case involving process patents, operated under the theory that the lens finishers, the people who perform the last step, directly infringed while those who partially completed the lenses contributorily infringed. I think this is actually the law and not the law as dictated by Judge Rader. Certainly, Rader did not consider §271(g) in coming up with this theory that method claims could not be infringed where independent parties performed different steps, albeit they cooperated to perform all the steps on the finished product. Nor the judge Rader consider Univis Lens.

  44. 15

    Come now Malcolm, the last time you posted hyperlinks to past threads, those threads were full of righteous smackdowns of you

      (you know, the Myriad case, in which I was right and you were wrong).

    In fact, I had to post additional hyperlinks since you (I am sure by accident) omitted the post-oral argument threads that saw you wildly gyrate and actually come full circle and endorse the view that I had put forth

      (you know, the one that you said you could not understand because of the English as a second language).

    Let’s check with Keeping It Real, Robert, Francis, Shrivan, and of course Vivika M. to see how ‘they‘ feel about ‘svckpuppets.’


  45. 14

    1) I have a GREAT relationship with God. Thanks for the concern though.
    2) I do not ‘bully’ anyone. When someone kindly asks me to rub their nose in their own CRP, I happily oblige them. I have explained that such people have control over the posts – simply don’t CRP.

    Like 6, do you think that my ripping on Malcolm is just too effective? Perhaps then you and Leopold should figure out just where exactly to aim the arrows.

  46. 13

    No fantasies at all Malcolm, the archives are there with plenty of examples of you toasting your agendas.

    Great examples like “configured to” is structural, like you recognizing the controlling law on the exceptions to the printed matter doctrine (but still blatantly 1ying in attempts to push your agenda), and the most recent example of your first substantive attempt at squaring Prometheus with the precedent case most on point and tossing your beloved [oldstep]+[newthought] theory into a bonfire of your FAIL, and then refusing any attempt with your “keen intellect” of law and “mastery” of English as a first language to even try to explain your self-defeat away.

    Archives like that.

    Mmmmm, toasty.

  47. 12

    Please explain….

    Blah blah blah – last I checked the ledger, the deficit for answers runs deep against you Malcolm (or Keeping It Real, etc) – tell me, did you find the nuts yet to admit the obvious that I was right and that you were wrong with the Myriad case?


  48. 8

    From the earlier thread, a nice summary by Dennis of the Federal Circuit’s decision that is being appealed by the alleged infringer (Limelight):

    link to

    inducement liability exists where the accused infringer (1) knew of the patent; (2) induced performance of the steps of the method; and (3) those steps were actually performed. It follows also that the accused infringer will also be liable if it performs some of the steps of the method and then actively induces performance of the other steps.

    As noted previously, that does seem to be a reasonable rule. Will the Supreme Court re-consider its statements in the earlier Aro decision (“It is settled that if there is no direct infringement of a patent there can be no contributory infringement.” Aro, 365 U.S. at 341)? Will the Court reverse itself and admit that the earlier statements were made improvidently? Will it do a somersault and hold that the statements in Aro were somehow limited to the facts of Aro? Or will it reverse the Federal Circuit and drop a footnote suggesting that if people are unhappy they can lobby their Congressperson to fix the statute?

    I wonder what the patent t–b-ggers are hoping for. Perhaps they are waiting to see what “bio” says before launching their offensive.

  49. 7

    without also providing some justification

    Another Classic Malcolm: “I wonder what qualifies as “justification”?

    Well, Malcolm, if you had paid attention instead of just standing by and [shrugging], when I explained the traits of poor quality blogging, you would have learned a bit or two about what qualifies.

    But if you have anything (intelligent) to actually add to the conversation, by all means, let’s hear your thoughts on the patent history of Congress punting to the judiciary in 1873 and then reclaiming from that same judiciary in 1952 the common law ability to define ‘invention.’

    Oh wait, you don’t have anything to say?


  50. 6

    I was reading the previous comments and I saw this from Dennis to another commenter:

    I appreciate that you don’t like this verdict, but extreme comments (such as calling the judges corrupt) don’t carry much weight here without also providing some justification.

    I wonder what qualifies as “justification”? The patent t–b-gger/trolls here have been flogging this “corrupt judiciary” horse on a daily basis for quite a while.

  51. 5

    But I am not, McCracken. Really, I am just a sweet person – you know, one of God’s children.

  52. 4

    LOL – did you say something Malcolm?


    Anything that is non-vacuous, that is?

    LOL – thought not.

    How are those burns coming along?

  53. 1

    Wow that was pollyanna.

    Too much ‘inner child feel good’ and not enough ‘work for your rights and defend your rights’

    Those attacking from the Left and from the Right would love you to only be concerned with ‘how you feel.’

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